United States: A Smooth Patch In A Rough Road? Governmental Transition And Intellectual Property

Whenever a new Congress convenes, some IP issues come to the fore while others take a back seat. Transition to a new administration in the executive branch brings about even more significant IP change, and this effect is compounded when a new political party takes charge. Understandably, IP issues have not been making headlines in this post-election cycle, being overshadowed by issues such as controversial executive orders, cabinet nominees, and judicial nominations. Nonetheless, there has been a great deal of activity on both the outgoing and incoming sides, and looking at it all in one place may give us a sense of what is likely to come in 2017 and beyond. Let's start with a sampling of the late 2016 developments.

In December, the House Judiciary Committee published a one-page Reform of the Copyright Office document that was as notable for what it did not contain as it was for what it proposed. Back in October, the press was abuzz with reports that the newly appointed Librarian of Congress essentially fired the head of the Copyright Office (the Register of Copyright) for copyright policy reasons. The Librarian, Dr. Carla D. Hayden, had been appointed by President Obama and replaced James Billington, who held the post from 1987 to 2015. The timing of the new appointment coincided with an effort to make the Office more independent from Congress, with some calling for it to move from the legislative branch to the executive branch. The Judiciary Committee started the document by acknowledging that the current statutory framework for the Office is outdated and that the Office should be able to "provide independent and timely advice to Congress" and "have autonomy over its budget and technology needs." After that, however, the "reform" suggested by the document seems more intended to prevent the exercise of independence by the Office. First, the Committee reasserted that the Office should remain part of the legislative branch. Next, it advocated that not only the Librarian of Congress, but the Register as well, be subject to nomination/consent, essentially stating that Dr. Hayden should not attempt to name a new Register herself. Further, the Committee suggested that various committees be formed to "advise the Register on critical issues." In still a further effort to consolidate power, the Committee suggested that a "small claims system" be hosted by the Office to manage both low value infringement disputes as well as bad faith takedown notices under 17 U.S.C. § 512.

Also in December, the executive branch's Intellectual Property Enforcement Coordinator submitted to Congress a New Joint Strategic Plan on Intellectual Property Enforcement. This 163-page document is styled as a forward-looking enforcement outline for 2017–19. The Joint Strategic Plan is broken down into four sections. The first section contains a highly detailed explanation of the economic aspects of IP, as well as examples of business models that rely on IP infringement. The second section deals with online IP issues, including details regarding practices and policies to curb abusive activities. The third section outlines how the government is seeking to stem illicit trade via counterfeit and pirated products. The final section is focused on bigger-picture issues regarding IP enforcement. Those interested in these topics will find the Joint Strategic Plan contains a great deal of information on piracy and counterfeiting methods that may not otherwise be known to anyone but specialists. For instance, it explains and illustrates what a "game copier" is, a device that takes a software protected video game, bypasses security measures, and creates unauthorized copies. A lower-tech example is an illustration of counterfeit Duracell batteries covered with a plastic wrapper that makes them appear (for border-crossing purposes) to be merely off-brand batteries. Once on-shore, the coverings are removed and the batteries are sold as if they were the legitimate name-brand product. The danger of such goods is illustrated vividly, with exploding, counterfeit hoverboards and counterfeit bicycle helmets that dramatically failed safety tests. The Joint Strategic Plan urges what it terms a "Whole of Government" approach to IP enforcement that goes far beyond standard Customs policies. For example, the Joint Strategic Plan urges that the government, in its own procurement/acquisition activities, promote supply-chain accountability. It suggests that the government undertake policies that encourage the innovation that takes place in universities. And it emphasizes the unique resources the government has to help stem trade secret misappropriation (which the Joint Strategic Plan universally styles as trade secret "theft" for emphasis on its economic impact).

The IPEC's FY16 Annual Report on Intellectual Property Enforcement, transmitted to Congress on January 12, 2017, is a 103-page counterpart to the Joint Strategic Plan but looks back on the past year rather than forward. The emphasis in the Annual Report is that the government needs to lead by example (e.g., carefully look for counterfeit products entering the supply chains of the military and the federal government in general). Lest all of IPEC's activities be viewed as promoting the interests of IP owners, significant consideration is given to the rights of other stakeholders as well. For example, the Annual Report emphasizes the importance of fair use and the exercise of due care so that government enforcement approaches do "not discourage people from building appropriately on the copyrighted works of others." The Joint Strategic Plan and the Annual Report thus serve as a highly detailed tutorial to help guide the new administration on some of the more important aspects of IP.

Moving from examples of what was done before Inauguration Day to what is likely to happen in the future, we look first to the patent front. While initial reports strongly suggested that Michelle Lee would be replaced as Director of the U.S. Patent and Trademark Office, it now appears that she might remain at her post under the new administration. There has been no official announcement as of yet, and the Department of Commerce leadership webpage lists the position of USPTO Director as "Vacant." However, several sources, including Representative Darrell Issa (R-CA), confirm that President Trump has decided to keep Lee on as Director. Issa, who holds 37 patents himself, has been a vocal supporter of Lee, calling her "one of the great things to come out of the Obama era" and telling a crowd at January's Consumer Electronics Show that "we just have to get Michelle to stay on long enough to finish what she started."

If Lee does not remain at her post, there may well be a gap between appointed directors that could last through the summer, particularly given the federal hiring freeze that the president ordered soon after taking office. Lee herself was not officially sworn in as Director of the USPTO until March 12, 2015 – two years after the last appointed and confirmed Director, David Kappos, resigned and 18 months after the subsequent Acting Director, Teresa Stanek Rea, resigned. With many cabinet and subcabinet positions to fill, recent first-term presidents have taken several months before appointing new USPTO Directors. And who the new administration might tap to replace Lee is anyone's guess; little was said about the patent system during the campaign, and the new administration has yet to comment publicly on possible successors. Most experts, however, predict a nominee that supports strong IP rights. Rumored successors include former Federal Circuit Chief Judge Randall Rader, Johnson & Johnson's vice president of IP policy and strategy, Philip S. Johnson (past president of the Intellectual Property Owners Association), Fish & Richardson principal Michael McKeon, and former USPTO Deputy Director Stephen Pinkos. Both Rader and Johnson have confirmed their interest in the position, with Rader saying that his "top priority is to 'make patents great again'" and Johnson announcing his intention to "continue serving the IP community" when he retires from Johnson & Johnson in February.

Less uncertain in the IP world is the fate of the Trans-Pacific Partnership, President Obama's signature trade deal. Both major party presidential candidates were highly critical of the TPP during the 2016 campaign, with President Trump calling it a "death blow for American manufacturing." In keeping with his promise to abandon the trade deal upon entering office, President Trump signed an executive order during his first week in office withdrawing the United States from the negotiating process, calling the move "a great thing for American workers."

The new administration's opposition to the TPP is unsurprising given its strong territorial views and protectionist approach to trade, but abandoning the trade agreement will likely have profound implications for IP. Chapter 18 of the TPP addresses the protection and enforcement of IP and contains numerous substantive provisions addressing all areas of IP. The TPP standardizes the term of copyright protection to the life of the author plus 70 years and adopts a two-part fair use analysis that requires member countries to balance the interests of rights holders and users of copyrighted works. With respect to patents, Chapter 18 adopts a 12-month grace period for the applicant's own disclosures and makes patent term adjustment available for delays in prosecution or market approval for pharmaceuticals. And on the trademark front, Chapter 18 presents a broadening definition of eligible subject matter by expanding the scope of protection to cover sound marks and requiring member countries to make "best efforts" to register scent marks. Finally, it contemplates strong trade secret protection by criminalizing trade secret theft. Though its proponents argue that the TPP's IP provisions would strengthen protections available to rights holders and boost economic growth in its member countries, the immediate abandonment of the deal suggests that the new administration could take a drastically different approach to trade than President Obama. All that said, the TPP faced an uphill battle even during the Obama administration, so the actual change in policy from abandonment of the TPP proposal is modest at best.

Shortly after his inauguration, President Trump announced two new measures that could place significant constraints on the federal IP system: a "one in, two out" order curtailing federal regulations and a plan to defund the National Endowment for the Arts. As to the former, it is unclear for example what rationale might exist for forcing the USPTO to find two regulations to remove if it wants to clarify by regulation some procedure to be used in Patent Trial and Appeal Board proceedings. The result may well be that ambiguities in USPTO practice do not get clarification during this period. As to defunding the NEA, that endowment provides the bulk of funding for volunteer lawyers for the arts programs, such as those recently added as a result of the America Invents Act's mandate that the USPTO "shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses." Without funding from the NEA, these organizations could cease to operate and render the USPTO, part of the executive branch, unable to comply with the congressional mandate, and therefore vulnerable to possible legal action.

Even with these changes, the developments in IP policy that are occurring as a result of the November election are not likely to be nearly as dramatic as in other policy areas. Thus, IP practitioners and their clients can find some solace that they need merely continue worrying about such "mundane" issues as subject matter eligibility for patents, whether the USPTO should engage in what some call "censorship" in examining marks for registration, the extent to which three-dimensional scans of objects should be subject to copyright protection, and whether an employee's LinkedIn contact list constitutes a trade secret of the employer.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
25 Oct 2017, Conference, California, United States

CALOBA is excited to bring you our General Counsel (GC) roundtable event. Our distinguished panel of top legal counsel will share their experiences at the helm of some of the top technology companies.

30 Oct 2017, Seminar, California, United States

This program will address some of the hottest legal and policy topics that online platforms have brought to the fore: free speech, hate speech, fake news, privacy and surveillance, artificial intelligence, augmented reality, changing notions of “ownership” of information and software-enabled consumer products, and the perennial issue of copyright.

8 Nov 2017, Conference, California, United States

Fenwick & West is proud to be participating in PLI’s 49th Annual Institute on Securities Regulation scheduled for November 8-10, 2017 at The Roosevelt Hotel in New York City. The Institute is considered the premier conference, as well as one of the longest running, in the securities law field.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.